Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 31 December 2004

One half of the IPKat who has just come back from her holidays noticed the following IP related articles in the British Airways inflight Business Life magazine:

1. Did you know that according to the Eurostat Yearbook Swedes are the most likely nationals in Europe to apply for a patent?

2. A column by Frank Kane of the Observer newspaper, arguing that the backlash against global brands is likely to take on even more force thanks to the role of China – the combination of a third of the world’s consumers and enormous manufacturing capacity will allow the Chinese to make for themselves what they are unable to afford.

3. A column by Simon Myers of the Figtree branding agency warning against rebranding for the wrong reasons such as personal obsessions and the arbitrary exercise of authority.

Some jurisdictions employ the standard Berne Union measure of "life plus 50 years" for the duration of copyright; others employ the European Union's "life plus 70 years" formula. This means that 1 January 2005 will see the entry into the public domain of a vast number of works. To give you some idea what you can -- depending on the country -- now copy or perform with impunity, the IPKat has compiled this short but helpful list.

People who died in 1954

* William R Inge: the Gloomy Dean, who made it to the cover of Time magazine in November 1924 and who said: “it is useless for the sheep to pass resolutions in favour of vegetarianism while the wolf remains of a different opinion”.

* Charles Ives: prolific American composer, despite spending his professional career in the insurance sector.

Peer-to-peer site LokiTorrent has announced its intention to resist the onslaught of the Motion Picture Association of America (MPAA) against P2P providers and to put out a virtual hat to finance its legal fund. LokiTorrent, which uses BitTorrent technology, posted a letter from the MPAA on its site on Tuesday. That letter states that the MPAA has filed suit against it in a Texas district court, demanding that Loki Torrent cease linking to video files that could infringe studios' copyrights. It read:

"If you've ever benefited from this site or file-sharing in general, now is the time to show your support. We are looking at a cost of $30K per month in fees".

By the time this blog was posted, nearly $18,842, or about 60%of the total needed for a month, had been gathered according to a bar graph on the site.

BitTorrent: now LokiTorrent provides valuable information
for IP lawyers who don't know if clients can afford their fees

Sites acting as "hubs" for BitTorrent sharing of movies, TV shows and other free downloads are the most recent focus of the copyright holders' war on peer-to-peer technology. BitTorrent technology streamlines downloads by usilising a centralised server that hosts indexing information and locates the actual data files on members' computers. Someone downloading a large file will grab the actual data from one of several members' computers which previously downloaded the file. The result is a faster download that does not overwhelm the bandwidth of any single server. This technology has become an efficient way for companies to offer large downloads legitimately and economically. For example, Linux vendors MandrakeSoft and Xandros offer the free version of their operating system only through a BitTorrent download. By doing so, neither company has to pay large bandwidth fees when a large number of users download the software.

The IPKat really likes the bar-chart idea as a means of tracking contributions to a legal fighting fund: apart from encouraging (or discouraging) contributions, it also gives the other side a clear idea as to the depth of its adversary's pocket if litigation gets serious.

The Daily Telegraph reports that a number of US Navy SEALs are bringing a privacy action against the Associated Press News Agency for distributing pictures which appear to show them abusing prisoners. The SEALS claim that the pictures were taken from a private password-protected photo album and that there was no need to show the SEALs’ faces as this could put them in danger. The agency has said that the photos came from a commercial picture-sharing website.

The IPKat notes that if this case was played out in the UK the issue would be a tricky one. If the pictures really do show abuse taking place then any breach of confidence or privacy claim might be unsuccessful based on the principle that there is no confidence in an iniquity. However, if the pictures put their subjects in danger then the human right to life may also have a part to play.

Thursday, 30 December 2004

The IPKat has finished perusing the December/January issue of the increasingly enjoyable and informative bimonthly Intellectual Asset Management (IAM), published by Globe White Page. This issue includes the following features:

* Nigel Page writes on the compensation received by Japanese employees whose patented inventions have been profitably exploited by their employers;

* Craig Opperman writes on the pros and cons of patenting software in Europe, viewed from the perspective of the perceived interests of smaller companies which try to compete against the multinationals;

Alain Pompidou: the increasingly public face of the EPO, till Alison Brimelow takes over

* An interview with Alain Pompidou, President of the European Patent Office;

In an in-depth feature published today, Law.com reports on Indian generic pharma company Ranbaxy's assault on Pfizer's Lipitor (apparently the world's most prescribed drug). Pfizer is resisting the challenge to its patent and it will be some time before the outcome of this dispute is known.

Lipitor: good for lowering cholesterol levels; not so good for lowering the blood pressure of patent litigants

Curiously, the IPKat says, the author of the article describes Ranbaxy as the David to Pfizer's Goliath. This rather creates the impression that Ranbaxy, which makes its money by making and selling cheap versions of drugs that have been expensively and carefully tested by proprietary pharma companies, is some sort of small, weak outfit. Ranbaxy is however nothing of the sort. By the admission of its CEO, Brian Tempest,

"From a small domestic company at inception, we have grown formidably to be a Billion dollar institution".

The company, which experienced 27% growth in the year ending December 2003, now employs 9,000 people. The IPKat expects that it can afford to tackle Pfizer in patent litigation without having to pass round the begging bowl.

Wednesday, 29 December 2004

The seventh and latest edition of Russell-Clarke and Howe on Industrial Designs -- has now been published by Sweet & Maxwell and is currently sitting on the IPKat's desk. This work, a much-needed rewrite of the 1995 sixth edition, has been produced in no-nonsense fashion by Martin Howe QC, one of the leading lights in heavyweight IP set 8 New Square.

Martin Howe: his no-nonsense approach doesn't make design law any easier, but it does make it easier to navigate

Anyone involved in design protection in the United Kingdom will know how extraordinarily complex the law currently is. With Community registered and unregistered design rights, UK registered and unregistered rights, artistic copyright and both Community and UK trade mark registration all relevant to aspects of design protection, even a simple object like a drinks bottle or a key-fob can raise problems that transcend the convenient boundaries that mark out the different intellectual property rights.

This hardback contains nearly 1,000 pages, of which only around 40% represent the author's legal analysis rather than the now nearly obligatory blocks of prelims and appendices that bulk out most modern law books. As it happens, design protection is a subject in which appendices are actually quite helpful -- the fact that lawyers must be familiar with two operative versions of the Registered Designs Act 1949 and the difficulty in picking out relevant parts of the UK copyright legislation give testimony to this.

The IPKat notes that it can be difficult to persuade legal practitioners to part with their money for anything to do with design right: it is often perceived as a "minority interest" and even IP practitioners who specialise in design law generally derive only a minority of their income from it. This is why books, conferences and seminars on the subject have all struggled to attract a good and profitable market. This is a shame, given the increasing relevance of the newly-expanded design law to everyday commercial exploitation of new products and the increased volume of IP practice likely to follow in its wake. He hopes this book will succeed: given the effort that has gone into producing it, it certainly deserves to.

China View brings news of enterprising Chinese companies that are cashing in on the popularity of local film titles by registering them as trade marks for their own products. Thus local cinema hit "Kung Fu Hustle" has been purloined as a brand name for paint and (ironically) "A World Without Thieves" has been stolen for use by a Beijing technology company. Local legal expert Li Mingzu says that, while the films are copyright-protected, current laws don't protect their names from being used.

"According to verdicts of past cases, the use of a film name as a brand doesn't violate intellectual property laws. And film titles won't be protected by intellectual property right laws."

However, Li Guoming, secretary-general of the China Filmmaker Association, says film-makers can protect their own rights better if they make good use of the added value of their works. He suggests Chinese film-makers seek to have their films published overseas or use film names for toy, costume and even software brands.

The IPKat sympathises with the film-makers and wonders whether Chinese trade mark law possesses a concept of bad faith that might invalidate such unwanted reputations. Merpel wonders about the market potential for "Kung Fu Hustle" -- the fact that a brand name like that might sell paint in China is probably quite indicative of the different way in which consumers in that country respond to brand names (imagine buying "The Terminator" paint in England).

Tuesday, 28 December 2004

According to Business Wire, Hitachi Global Storage Technologies has just announced that it has sued GS Magicstor Inc. of China, its Chinese parent company GS Magic Inc. and Riospring, Inc. of Milpitas, CA. (Magicstor's research affiliate) for infringement of numerous Hitachi GST patents relating to hard disk drives. The suit, filed in the United States District Court for the Northern District of California, seeks monetary damages and a permanent injunction that bars the GS Magic entities from making, using, importing, offering to sell, or selling the allegedly infringing products in the US. Said Robert Holleran, general manager of Hitachi GST's Hard Disk Drive Group:

"Hitachi GST's ability to compete in the hard disk drive industry is based on a history of deep investment in research and development, particularly in the advancement of innovative small-form-factor hard drives. We have a responsibility to protect our investment and the intellectual property of our company against those who are competing unfairly in our industry".

Hitachi Global Storage Technologies was founded in January 2003 as a result of the strategic combination of Hitachi's and IBM's storage technology businesses. By the end of 2003, Hitachi GST became the industry's second largest hard disk drive manufacturer with $4.2 billion in revenue. The company's goal is to enable users to engage fully in a digital lifestyle by providing access to large amounts of storage capacity in formats suitable for the office, on the road and in the home. The company offers customers worldwide a comprehensive range of storage products for desktop computers, high-performance servers and mobile devices.

Hitachi: a hard job policing hard disk drive patents?

The IPKat is sure that GS Magicstor won't give up without a fight. The cost and uncertainty of patent infringement might well result in the grant of a licence to Hitachi's competitor and erstwile infringer.

The IPKat's just discovered another new book, courtesy of Sweet & Maxwell: it's called The Law of Photography and Digital Images and it's by a London-based barrister, Christina Michalos.

The publisher's blurb describes the book as a "groundbreaking work" which provides "a one-stop source for all lawyers advising on the law of photography and digital images". Having written a book or two in his time, the IPKat would prefer "backbreaking" to "groundbreaking", but the bit about the one-stop shop is right. This isn't just a book about photography and digital images in their intellectual property context: a quick perusal of the table of statutes and statutory instruments provides a salutary reminder of the vast number of legal issues that beset photographers and those who want to use their images but which have absolutely nothing to do with the usual copyright issues of ownership, control, licensing and infringement. The human rights dimension is a just one case in point: some people don't want to be photographed while others pursue them, camera in hand, with passionate intent.

The IPKat likes the way the author has tackled the subject. She has not been sparing in her research, bringing numerous US and other non-UK citations to bear. If he had written the book, he would probably have given less space to the bits that deal with the Advertising Standards Authority and Press Complaints Commission -- not because the author has over-analysed them (she hasn't) but because they seem to him to be such weak and wimpish bodies and he doesn't like to think of genuine victims of advertising and press abuse being led to think they can really be of any help.

Christina Michalos has got her subject in sharp focus

The rather steep price of £155 suggests either (i) that the publishers know they've got a captive audience who will pay anything for a book on this subject and of this quality, or (ii) that they aren't expecting to sell too many copies. If this results in fewer people reading this work, that would be a shame. This book is obviously written by someone who is both well-informed and enthusiastic: it deserves a good audience too.

Monday, 27 December 2004

The IPKat has just read of the contrived attempt to ensure that the late Elvis Presley, heading for what would have been his 70th birthday, captures the allegedly coveted 1,000th Number One spot in the UK Singles chart.

Is Elvis still alive? The hunt moves to Japan ...

Says the IPKat: "It is difficult to feign indifference when it is so very deeply felt".

Today's The Economic Times reports that India's patent law provisionally extends its protection today to cover a range of products from drugs and chemicals to mobile phone and computer software, in line with commitments to the World Trade Organization under the TRIPs treaty. Commerce and Industry Minister Kamal Nath said the amendment was made by presidential decree yesterday. The decree signals a breakthrough in patent reform, which had been stalled by concerns raised by communist allies of the ruling coalition and opposition parties, who wanted adequate safeguards to maintain price stability of life-saving medicines. Said Nath:

"The fear that prices of medicines will spiral is unfounded. [...] we must realise the fact that 97 percent of all drugs manufactured in India are off patent and so will remain unaffected".

Up to now India has granted patents for processes but not for products. Nath added that he was confident of securing parliament's approval for the patent amendments in the budget session of parliament in February (under Indian law, the presidential decree has to be approved by parliament).

It is predicted that the change in India's patent law will spur domestic drug companies to look aggressively at developing new drug research themselves. By implementing the legal changes, Indian drug companies will be eligible to make generic drugs for booming export markets, where drugs worth billions of dollars are set to go off patent in the next few years, the minister said.

"Indian industry can grab a lion's share of this provided we are a bona fide member of the international trading community and are not in a questionable position, open to the possibility of retaliatory measures and sanctions. By participating in the international system of intellectual property protection, India unlocks for herself vast opportunities in both exports, as well as her potential to become a global hub in the area of research and development".

Indian inventivity: not just confined to the Chicken Vindaloo

The IPKat is delighted that India is putting its house in order and feels sure that its fast-growing, powerful drgus industry will soon benefit from the protection accorded to home-grown innovations. Merpel adds that TRIPs compliance will also provide a boost for local intellectual property lawyers, who can expect to pick up a good deal of non-contentious licensing and regulatory work in addition to the prospect of a boom in infringement litigation -- but will India's judicial system be able to handle it?

Sunday, 26 December 2004

The third edition of Richard Arnold QC's standard work Performers' Rights has now been published by Sweet & Maxwell. As Editor of the same publisher's Entertainment and Media Law Reports Richard is well placed to appreciate the subtle dynamics of this subject, wrongly regarded by many as an unattractive backwater of copyright and neighbouring rights law. At a time when performers find themselves increasingly competing with their own recordings or with synthesised music that makes them redundant, the need to identify and pay careful attention to the parameters of performance law has never been greater (in this context the IPKat also bears in mind the recent "Brick in the Wall" claims arising from children's performances dating from 1979, here and here (scroll the IPKat to 2 December)).

This edition takes into account the implementation of Directive 2001/29 (the Copyright Directive) into UK law and considers its impact on performers' rights. It also includes major developments in case law, such as Case C-245/00SENA v NOS decision of the ECJ on equitable remuneration and the Experience Hendrix v PPX decision of the Court of Appeal on damages for breach of contract. Not only that, but the impact of the internet (especially in terms of file sharing), the present role of collecting societies and the problems of securing equitable remuneration are also discussed. There's also a new chapter on performers' contracts which deals with the terms relating to consent to exploitation which contrasts the legal requirements in respect of performers and exploiters.

Performers: having a hard time of it in the digital age

The IPKat likes the look and feel of this book, which he feels to be more sharply focused and crisply written than the earlier editions.

The sequel to the Order of the European Court of Justice in Case C- 259/02 1 has emerged in Mr Justice Blackburne's Chancery Division ruling in La Mer Technologies Inc v Laboratoires Goemar SA, 20 December 2004 (still unavailable via BAILII and the Court Service websites).

Goemar, a company that specialised in seaweed products, obtained registration of two trade marks comprising the words LABORATOIRE DE LA MER.

The first mark, for perfumes and cosmetics containing marine products (Class 3), was registered in February 1992. Sales in the UK for the five years after registration were very limited, amounting to only about £800 worth of goods, which were sold to Goemar’s Scottish-based agent who subsequently ceased trading and was struck off the register of companies in October 1997. Most of the goods sold were covered by a single delivery in mid-April 1997. There were four other deliveries, none being before November 1996 nor after May 1997.

The second mark was for pharmaceutical, veterinary and sanitary products, dietetic products for medical use and containing marine products (Class 5). About £600 worth of goods were arguably within the Class 5 registration.

In March 1998 La Mer sought to revoke the two trade marks on the ground that there had been five years’ continuous non-use. The application relating to the Class 3 registration succeeded only with regard to perfumes; that relating to the Class 5 registration succeeded only for pharmaceutical, veterinary and sanitary products. La Mer appealed, contending that both registrations should have been wholly revoked. The appeals were allowed in relation to the remainder of the Class 5 goods. However, on the appeal relating to the Class 3 goods Mr Justice Jacob referred to the European Court of Justice seven questions concerned with the meaning of ‘genuine use’ as those words appear in Articles 10(1) and 12(1) of the Trade Marks Directive (Council Directive 89/104) and section 46(1) of the Trade Marks Act 1994 which implemented those Articles. Following an Order of the ECJ the case returned to the High Court for determination of whether Goemar had shown ‘genuine use’ of the mark within the relevant period of five years.

Mr Justice Blackburne allowed La Mer’s appeal and revoking the Class 3 registration in its entirety, holding that the use of the mark which Goemar had shown was not sufficient to amount to genuine use.

* Whether proven use amounted to genuine use depends on all of the facts and circumstances, including the characteristics of the market concerned and of the products or services in question, as well as the frequency or regularity of use of the mark.

* Here there was nothing to indicate that the products had ever been offered for sale, let alone sold. to members of the public, as end users or consumers, or that steps -- whether in terms of advertising or otherwise -- had been taken to bring to the public’s attention the existence of the mark as a means of distinguishing those products from others having another origin so as even to start to create for them a share in the market for cosmetic products of that or a similar kind. It followed that the proven use fell short of genuine use.

Merpel says: "Watch out! Even marine cosmetics can have surprising side effects"

The IPKat suspects that, despite rulings in this case and in Case C-40/01Ansul, courts in different jurisdictions will still consider different degrees of use to be genuine. Also, use which is genuine in respect of some types of goods or services may not be regarded as genuine in respect of others. This may be no bad thing, since markets operate differently in countries and in respect of different commodities and services, but lawyers should remember when citing precedents that earlier decisions on what constitutes genuine use may be closely determined by a unique set of facts and that no analogy between different cases may be apt.

European trade mark owners' organisation MARQUES is trialling a news service. Just go to the MARQUES home page and you'll find it just below the organisation's Welcome message. The IPKat says this looks like a jolly good service and hopes MARQUES persists with it. There's lots of business and branding news, Merpel adds.

Friday, 24 December 2004

The BBC reports that it has been a big week for IP rights in China. Honda has won what is reported to be a copyright case, allowing it to stop a third party from producing Honda brand bikes. Paw Inc have managed to stop the production of pirated Garfield books and China has announced that it will introduce criminal sanctions against IP infringers, including prison sentences.

* Stina Teilmann reviews Immanuel Kant's argument that copyright was justified in respect of literary but not artistic works;

Corona: the lemon-in-bottle issue will be coming to a head with an appeal to the ECJ

* IPKat co-master Jeremy writes about the Court of First Instance decision in Case T-399/02 Eurocermex on the non-registrability as a Community trade mark of the lemon-stuck-in-bottle top for CORONA beer.

Dyson made vacuum cleaners; Qualtex supplied spare parts for domestic appliances that were duplicates of the original parts. Dyson sued, alleging infringement of unregistered design right in a number of vacuum cleaner spare parts including wand handles, cable winders and brush bars. It was accepted that parts of each of those designs was covered by the ‘must fit’ and ‘must match’ exceptions set out in s.213(3) of the Copyright, Designs and Patents Act 1988, but Dyson maintained that bits of design for each product did not fall within either of those exceptions. Qualtex admitted that all the parts were copied but argued that (i) many of the relevant designs had been copied from elsewhere, (ii) the ‘must fit’ and ‘must match’ exceptions applied to significant areas of most of the parts, (iii) the parts of the designs that were not excluded were commonplace and that (iv) some aspects of the designs were mere surface decoration. In addition, it relied on estoppel, or on waiver or acquiescence, on Dyson's part.

Dyson: "Anyone who copies my parts is a sucker"

Mann J allowed Dyson's infringement claim.

* Qualtex clearly infringed the unregistered design right and failed in almost all instances to establish that the statutory defence applied.

* There could be no estoppel unless Dyson had known of an encouraged Qualtex at an appropriate corporate level. Qualtex could not in principle rely on knowledge on the part of, and encouragement by, someone who would not be of an appropriate seniority to bind Dyson. On the evidence, no senior Dyson knew of Qualtex's activities before 2002, nor could Qualtex prove Dyson had done anything capable of amounting to any level of encouragement.

The IPKat notes that defences to infringement of IP rights that are based on estoppel are raised from time to time but hardly ever succeed on the evidence. Do they really add up anything more than trivial nuisance value?

Thursday, 23 December 2004

The Trademark Blog carries the news that the WTO has criticised the EU for its handling of the dispute between Czech Budweiser and American Budweiser. It appears that the EU’s policy as regards the protection of geographical indications was felt to offer less favourable treatment to producers from outside the EU.

The IPKat suspects that one’s position in the Budweiser dispute is influenced by which side of the Atlantic one hails from.

Wednesday, 22 December 2004

Medical News Today reports that Canada is proposing to amend its patent law in order to optimize the balance between encouraging continued innovation in new drugs and promoting timely generic competition. Under the proposal pharmaceutical companies will not be able to extend the period of data exclusivity that they are granted in a way that is incompatible with the original purpose of such protection. This should enable generics to come to the market more easily. However, for genuinely innovative drugs, the data exclusivity period will be extended from 6 years to 8 years, with an extra 6 months for drugs which have been the subject of clinical trials on children.

The IPKat welcomes this subtle approach, which directs its measures specifically to the problems identified, rather than a “one size fits all” approach.

The IPKat has been kept on the tips of his paws, impatiently awaiting the second edition of Neil J. Wilkof's iconic work Trade Mark Licensing (Sweet & Maxwell). Happy to say, this title has now emerged and Neil, with the help of various friends, has produced an even better work than the original -- which was unleashed on an unsuspecting readership of private practitioners and in-house attorneys ten long years ago.

As the publishes boast on their web-blurb:

"Trade Mark Licensing provides a completely rounded perspective on the subject, integrating discussion of legal concepts with extensive advice on practical concerns. The new edition has been completely updated, including expanded sections on the EU dimension of trade mark licensing, merchandising, certification marks,and taxation (including treatment under US law)".

Neil's width of interest and depth of analysis are reflected in new chapters dealing with (i) the impact of TRIPs on trade mark licensing, (ii) new chapters on German, French and Benelux law which, the IPKat adds, should never have been necessary if total harmonisation of Europe's trade mark regimes had been secured, and (iii) special coverage of trade mark licensing aspects of the internet

A practitioner who has not forsaken the demands and intellectual rigours of thery, Neil (who himself also teaches Law at Haifa University) has taken on a co-author in Daniel Burkett, Research Associate at the Oxford Intellectual Property Research Centre and an enthusiastic copyright and competition lawyer. Some of the other chapters have been contributed by Christopher Stothers (Milbank Tweed Hadley & McCloy, London), Asim Singh (Sokolow Carreras, Paris) and Julie Le Bars (Nataf Fajgenbaum, Paris), Ludwig Kauker (Boehmert & Boehmert, Bremen) and tax specialist Nigel Eastaway (Chiltern plc, London). Nonetheless Neil's influence is felt throughout.

At £135 this hardback may seem dear to some, but it packs a lot of punch and is well worth the outlay. The reader has more than 450 pages of substance to read before he hits the Appendices: that's a lot for a book on this subject.

The IPKat has come across this rather natty little OHIM Board of Appeal decision concerning the registrability of the shape of a wavy sausage as a Community trade mark. It's in French, but from what the IPKat can make out, the appeal was allowed in so far as the mark was applied for for cheese but the mark could not be registered for meat products.

The IPKat notes that trade mark applicants can effectively put weird and wonderful types of marks on the European trade mark agenda, even if they have to merit to them, by applying to register and persisting with the application.

In Agilent Technologies Deutschland GmbH v Waters Corp and another (spotted by LexisNexis' subscription-only All England Direct service) [2004] EWHC 2992 (Ch) Mr Justice Pumfrey, sitting in the Patents Court, dismissed what looked like a pretty far-out patent infringement claim. Agilent owned a patent for to pumping apparatus for the delivery of liquid at high pressure which could be used in high pressure liquid chromatography columns. Following unreported proceedings in which the Court of Appeal ([2002] All ER (D) 152 (May)) held the patent valid and infringed, Agilent sued again, alleging that another Waters' pump system infringed. This machine operated in ‘manual mode’,the operator selecting pump volume from four pre-selectable volumes and separately specifying the flow rate of solvent delivered by the machine. This machine informed the operator if it could not deliver the specified flow rate at the volume specified but did not automatically change the range. Waters maintained that automatic operation was essential to the patent, while Agilent said the claim specified an apparatus which was capable of performing the required adjustment.

Agilent: are they trying to invent a machine for pumping out patent infringement claims?

Mr Justice Pumfrey dismissed the claim, holding that the patent was not infringed. On its true construction, the characterising portion of the patent could only be read as conferring a monopoly on apparatus capable of operating automatically in the manner described at length in the specification. The learned judge expressed the view that it was astonishing that a patent which was based upon a description which only contemplated automatic tracking of the desired flow rate should be capable of covering a device in which there was no such automatic tracking. The IPKat agrees with him. Whether you use the old Catnic/Improver test of non-exact infringement or the more sophisticated Kirin-Amgen approach, there's no scope for stretching this patent's claims to cover Waters' invention.

Tuesday, 21 December 2004

The IPKat has learned from James Heald of the FFII that the Software Patenting Directive was removed from the agenda of today's meeting of the Agriculture and Fisheries ministers (see yesterday's post) on the instigation of the Polish delegation. No date has been given for its future consideration.

Monday, 20 December 2004

The Register reports that the EU is due to give its final approval to the Software Patent Directive tomorrow (Tuesday). Bizarrely though, it will be the Agriculture and Fisheries Committee that will take the decision. The reason for this is that the Competition Commission, which would ordinarily be responsible for the Directive, does not meet again during 2004 and the Dutch are keen to have this Directive down on their tally before they relinquish the Presidency of the EU.

A fish comments: "... but will the Competition Commission be setting EU fishing quotas?"

The IPKat says that this all sounds a bit fishy (yum). What’s the point of having a scrutiny process if, when the specialists can’t make it, ministers with entirely unrelated portfolios can do the job instead.

CAT, a research-based company, was involved in the development and licensing of technology relating to the production of antibodies. Abbott were a group of pharmaceutical companies and its holding company. In 1993 CAT licensed Abbott to use its technology to produce a genetically-engineered human antibody for use in the treatment of rheumatoid arthritis. That agreement was renewed in 1995. The result of the collaboration between them was that Abbott produced a substance called HUMIRA. Under the agreements Abbott had to pay CAT royalties of just over 5% of the net sales of HUMIRA, subject to an offset or royalty-sharing provision. That provision allowed Abbott to deduct from the royalties half the royalties due under licences from third parties for certain categories of technology, subject to the payment by Abbott of a minimum royalty of 2%.

Humira: making rheum for more royalty payments

A dispute arose as to the meaning of the royalty provisions of the agreements. Abbott said they were entitled to offset 50% of the royalties it paid to third parties in respect of other patented technology used in the development of HUMIRA. As they had taken licences under a number of third party patents, Abbott argued that the offset had reduced the amount payable to CAT to the minimum payment of 2%, calculating its royalty payments accordingly. CAT accepted that the agreements contained an offset provision but contended that it applied only to royalties Abbott needed to pay: since all Abbott's licences related to patents covering parts of the HUMIRA production process but didn't involve CAT's technology, the offset provision should not be triggered. CAT therefore demanded that Abbott pay a royalty for the bulk of its sales of HUMIRA at the rate of just over 5%.

Laddie J allowed CAT's claim, holding that on the true construction of the agreements the construction argued by CAT was correct. It was, he said, the only construction which was consistent with all the other provisions of the agreements and made commercial sense in the factual matrix within which the agreements had been made. Accordingly, the royalties payable by Abbott should have been calculated on the basis of the full royalty of approximately 5%.

The IPKat looks forward to reading the full transcript of this decision: it's easy to decide the commercial sense in retrospect, but not so easy to divine it from the words the parties actually use when expressing their respective legal commitments.

...that you take a look at the Becker-Posner Blog, where the dynamic duo have posted their thoughts on pharmaceutical patents. Of particular interest are Judge Posner's comments advocating shorter copyright and patent terms.

The Court of Appeal gave its ruling last Friday, in Bongrain SA's Trade Mark [2004] EWCA Civ 1690, that the unusual shape of a piece of cheese was not sufficiently inherently distinctive for it to secure trade mark registration in the absence of evidence of distinctiveness acquired through use.

Bongrain applied to register as a trade mark (i) a three-dimensional shape and (ii) the same shape with a "ridged effect" on the surface (click here for official pics). The application related to a French cheese that was supplied as a whole cheese in a "six-lobed" or "flower" shape, with some superficial ridging. Bongrain argued that the fact that the shape was strikingly unusual was enough to give it distinctive character under Article 3(1)(b) of Directive 89/104 (s.3(1)(b) of the Trade Marks Act 1994). The application failed and Bongrain appealed.

Bongrain: cheesed off with the British courts?

The Court of Appeal dismissed Bongrain's appeal, holding as follows:

* There was a public interest in the need to preserve certain signs for other traders to use in the same or similar fields so as to maintain freedom of action and healthy competition (Case C-104/01Libertel Groep BV v Benelux Merkenbureau [2004] ETMR 63 and Case C-363/99Koninklijke KPN Nederland v Benelux Merkenbureau [2004] ETMR 57 considered).

* The fact that a shape was unusual was insufficient to confer upon it an inherently distinctive character since the public would not automatically take it as denoting its trade origin, which was the function of a trade mark. The public was not used to mere shapes conveying trade mark significance (Joined Cases C-456/01 P and C-457/01 PHenkel v OHIM considered).

* On the evidence it could not be said that the shape had acquired distinctiveness, so the claim that the mark was distinctive in fact under Article 3(3) failed.

The IPKat persists in wondering whatever happens to the "need to keep free" at the point at which a shape that is consistently used by one trader and which becomes associated with him is regarded as having acquired distinctiveness. Merpel says "why ever were people allowed to become obsessed by "need to keep free" anyway? Before the term was brought into European trade mark jurisprudence by the European Court of Justice, did traders in countries that didn't have that doctrine really suffer?

Sunday, 19 December 2004

arcelona and Brazil sharp-shooting football star Ronaldinho has secured the right to the www.ronaldinhogaucho.com domain name, according to an article in The Register. The article observes that Ronaldinho Gaucho's real name is actually Ronaldo de Assis Moreira (the former being his professional name), but he won his case before a WIPO arbitrator because he met all the criteria for the domain to be handed over.

* First, unlike most situations in which famous people have been handed domain names, his agent has applied for the registration of 11 trade marks for the name Ronaldinho Gaucho as long ago as February 2000. Ronaldinho has a clear interest in the name since he has numerous sponsorship deal with, among others, Nike, Pepsi and Electronic Arts.

Ronaldinho: WIPO referee rules him onside in domain name dispute

* Second, C. D. Webb, the person who registered the domain, clearly did so knowing who Ronaldinho was because the domain was only registered in July this year, nearly a year after he'd joined one of the most high-profile soccer clubs in the world - FC Barcelona - and after he'd picked up a World Cup winners' medal for Brazil. The site, as was, sold links to other sites with Ronaldinho-related content, as well as the usual gambling sites.

The IPKat notes that the WIPO domain-name resolution system is described as "trade mark friendly". That's not surprising, since the vast majority of applications that it processes are made against worthless parasites who merely seek to milk the reputation of others for their own gain.

The New Year is not yet with us, but Sweet & Maxwell has already published the January 2005 issue of the European Trade Mark Reports. This issue is something of a "European Dilution Special", since all the cases have a dilutionary slant to them.

Cases included in this issue which are available in English forthe first time are as follows:

Saturday, 18 December 2004

The BBC reports that Apple has brought a breach of confidence action in the US against as yet unknown individuals who have revealed details of a new Apple product on the internet. Apple has said that it will amend the complaint once it finds out who the alleged miscreant is. The complaint comes just weeks ahead of the MacWorld conference, where Apple has launched new products in the past. Apple fans have speculated on there being a launch of a new gadget at the 2005 conference.

The IPKat realises how annoying it must be for Apple to have its big launch spoiled, especially if suspicion that there’s a new version coming out puts people off buying iPods as Christmas gifts. Merpel however points out what great publicity the leak and the subsequent legal action could be.

Friday, 17 December 2004

Ananova mentions in passing that Elvis Presley's intellectual property assets are on the move: the report states that American businessman Robert Sillerman has bought the rights to the King's music and the worldwide merchandising of his name. No sum has been disclosed.

Elvis Presley with a personal message for the IPKat

The IPKat is the world's worst Elvis impersonator. He can do the singing bit, but cats aren't too great at wiggling their hips ...

The BBC reports that the EU has offered to begin talks with Turkey that could ultimately lead to Turkey becoming a member of the EU. 3 October has been offered as a start date for the talks, which could take as long as 15 years, though Turkey has not officially responded yet. Turkey’s entry to the EU though is likely to be dependent on its taking steps to recognise Cyprus.

The IPKat notes that if Turkey does accede, that’ll be one more country in which proprietors’ Community trade marks and designs will be effective. He wonders though which will come first – Turkey’s accession or the Community patent?

SKB had a patent for paroxetine hydrochloride anhydrate which was substantially free of bound organic solvent. Following patent revocation and infringement litigation, SKB and Apotex sought apportionment of the costs between them in respect of the first instance and appeal proceedings. In earlier proceedings the Court of Appeal had upheld Mr Justice Pumfrey's finding that Apotex did not infringe SKB's patent but it reversed his findings that the patentwas invalid for lack of novelty and inventive step. The patent had itself been substantially amended and claims which SKB relied on until the start of the trial disclaimed were subsequently abandoned. It was impossible to disentangle the various issues and make a precise allocation of costs, so the parties agreed that an overall conclusion should be reached as to whether one side should pay the other's costs and that, if one party did indeed have to pay the other's costs, a proportion of those costs should be offset after taking into account any appropriate factors by way of reduction. It was also agreed that the costs of the first instance and appeal proceedings should be dealt with separately.

The Court of Appeal affirmed that the basic provisions of the Civil Procedure Rules applied as much to complex patent infringement cases as they did to any other type of case. That being so, an issue-by-issue approach should be applied, so far as it was reasonably possible, though even that approach should not be thought capable of achieving a precise figure for costs. On the facts, Apotex were entitled to 16 per cent of their costs at first instance on a standard basis: this reflected the overall justice of the case, given that they were the commercial winners. SKB were also entitled to 25 per cent of their costs of the appeal on a standard basis.

Apotex: entitled, as commercial winners, to a contribution to costs

The IPKat says the cost of intellectual property litigation is so high that appeals to the Court of Appeal on the costs issue are made to look like a worthwhile proposition. In both this case and in Reed v Reed (dealing with trade marks) Lord Justice Jacob has sought to explain and clarify the bases on which costs are awarded. However, it is unfair for litigants to have to finance the cost of develeping costs jurisprudence out of their own pockets: clearer guidance should be made available, through legislation or a House of Lords ruling. Merpel says "I thought this was all about Cat Lit, not Pat Lit".

Ananova reports on legal proceedings involving Maxine Carr, the greatly reviled former girlfriend of British double-murderer Ian Huntley. In July, Carr's lawyers obtained an order protecting her new life. The injunction currently in place bans publication of any details which could reveal her new identity, including any description of where she lives and the nature of her work. Carr, 27, was jailed a year ago for conspiring to pervert the course of justice with Huntley, who killed schoolgirls Holly Wells and Jessica Chapman.

In May, Mr Justice Eady ruled that Carr's identity needed to be kept secret for her own safety following her release on probation that month after serving half of a 42-month sentence. He said the order was "necessary and proportionate" as there was "clear evidence" of danger to her life and physical well-being - which involved Carr being advised to wear bullet-proof clothing. The media did not challenge the issue of publication, but said that the injunction was too wide in its stance on the soliciting of information; they claimed that they needed to monitor where Carr was and what she was doing as there was a public interest in knowing whether, for example, she was seeking employment in a school.

Maxine Carr: in search of a secret identity

The IPKat draws attention to the contrast between the sort of control that celebrities seek over their name, image, reputation and details of their personal life with that sought by people in Carr's position. In the former case the public's interest is an asset that the celebrity seeks to exploit for commercial gain; the need to protect against access to or use of personal information is balanced against the public's interest in knowing what the celebrity is really like. In the case of Carr and others in her position there is no question of protecting a commercial interest: Carr's interest in being safe from attack is instead being balanced against the public's interest in its own peace of mind.

Thursday, 16 December 2004

The Register reports today that Autodesk and Microsoft have signed a cross-licensing agreement that will give each company broader access to the other's patent portfolio. Terms of the deal, which is reported to have taken six months to hammer out, were kept under wraps. The deal expands the scope of their co-operation into new areas including data management, digital effects, digital rights management, computer-aided design and location-based services. Brad Smith, general counsel for Microsoft, said the deal was good for customers of both companies because it expanded each company's reach on what he called "commercially reasonable terms". He added:

"Intellectual property licensing is a cornerstone of today's software industry and is essential for the development of comprehensive technology solutions".

Brad Smith: cross-licensing "good for customers of both companies"

This agreement is part of a larger effort from Microsoft to extend its intellectual property portfolio. The company has several other cross-licensing deals already signed, including agreements with Cisco, SAP and Siemens. According to CNet, it is currently in talks with more than ten other companies, and wants to sign a many as 30 more deals over the next five years.

The IPKat is cagey about cross-licensing agreements in the high-tech sector, after watching how the major players in the telecoms field have indulged in a degree of cross-licensing that makes it effectively impossible for new players to enter the market if they don't have their own portfolio of patents to throw into the pool. Merpel asks:

"don't the authorities that regulate competition have something to say on deals like this?"

The fifth issue of Legalease's bimonthly Advertising, Marketing & Branding Law Journal has now appeared. This journal carries bright, short, sharp focal writing on a wide range of topics within the general rubric of advertising and marketing law and practice. This issue's contents include:

* A review by Rupert Casey (Macfarlanes) of one of the IPKat's favourite topics -- but one which has hardly ever written about on this side of the Atlantic -- the legal consequences of viral marketing campaigns.

* Design rights campaigner Dids Macdonald (ACID) argues for an extension of the criminal law into the field of design infringement (the IPKat wants to know: is Dids a name in its own right or is it short for anything?).

Findlaw reports that Google has just won the case against it brought by Geico. U.S. District Judge Leonie Brinkema has said that Google’s Adsense program does not infringe trade mark law as there is no confusion of consumers. The program works by allowing third parties to bid for other peoples’ trade marks, so that those third parties’ advertisements will appear as sponsored links when the trade mark is used by consumers as a search term. However, the case is continuing with regard to the use of trade marks in the actual advertisements and pop-up advertisements.

The IPKat wonders whether, had this case been brought in the EU, Google would have been stopped under the unfair advantage of distinctive character head of trade mark infringement.

Look where there are no sponsored links: here and hereLook where there are sponsored links: here and here

Wednesday, 15 December 2004

The Register reports that Honeywell's legal action against 34 electronics and computing companies for allegedly infringing one of its liquid crystal display (LCD) patents has yielded its first public licensing agreement. NEC's LCD division said it had agreed to pay Honeywell for the right to use technology outlined in US patent number 5,280,371, which Honeywell filed in 1992. The financial terms underpinning the deal were not disclosed. The patent covers a LCD's "directional diffuser" - the filter used in many LCDs to increase the angles at which the screen can be viewed. This technique is employed in a range of devices such as notebook PCs, LCD monitors and TVs, PDAs, mobile phones, digital cameras and so on. Not surprisingly, given the wide use of diffraction systems, Honeywell has already licensed its IP to major LCD manufacturers, including Samsung and LG Philips. Honeywell launched its legal action in October, targeting 34 companies, including Dell, Apple, Nokia, Sony Ericsson, Fujitsu, Sony and Toshiba.

The IPKat recalls how well Texas Instruments did when it turned infringers into a solid income stream and also turned its legal department from a cost centre to a profit centre. It seems that Honeywell will be doing likewise.

The IPKat wishes to draw your attention to a recent US case. Those of you who have been following US law will realise that the Supreme Court delivered a decision last year, Mosley v V Secret, which stated that, in order to succeed in a Federal dilution claim, claimants must prove actual dilution rather than mere likelihood of dilution. However, the court made a rather cryptic comment:

“It may well be, however, that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence–the obvious case is one where the junior and senior marks are identical.”

There has been argument about whether this means that where the parties' marks are identical, this in itself constitutes circumstantial evidence of dilution and in that situation alone, there is no need to prove actual dilution OR whether circumstantial evidence can only be used to prove actual dilution if the marks are identical. In Savin v Savin, the District Court opted for the latter reading. However, the Savin court’s decision was overturned by the Second Circuit Court of Appeals on 10 December, which stated that where marks are identical, dilution can be assumed. Nevertheless, this presumption only applies where marks are identical and, according to the Second Circuit, the test for the identity of marks must be a very strict one – even marks containing the same words but in different typefaces may not meet it.

The IPKat thinks that this decision has an air of swings and roundabouts about it. While the actual dilution standard has become more lenient, claimants must undergo the difficult task of showing that their marks are identical in order to benefit from this loosening of the test. Merpel wonders what the position would be in the EU – certainly there are hints (such as the Advocate General in General Motors v Yplon) that actual dilution is needed for infringement in the EU, but no thought seems to have been given as to whether there would be a lesser standard for identical marks.

In a move that was widely expected by the UK patent fraternity, the UK Government yesterday announced its opposition to the relaxation of existing rules on the patentability of computer software. The announcement, in its relevant part, reads as follows:

Minister for Science & Innovation, Lord Sainsbury, ... outlined the Government's firm commitment to a patent system which fosters and supports innovation in all areas of technology, including inventions which rely on software.

The proposed European Directive on the patentability of computer-implemented inventions will not adversely impact on the software market, particularly in relation to Open Source, but will instead help support a strong and vibrant technology based industry.

Critics of the proposed Directive, who have been engaged in a letter writing campaign to government and MPs over the last five years, today were invited to discuss their concerns at a meeting with the Minister and Patent Office officials.

Speaking at the meeting Lord Sainsbury said:

"It is vital for Europe to have a climate which supports the software industry, including the valuable role Open Source has to play."

"Patents provide the confidence to invest in R&D for technological industries and the current draft Directive will ensure that Europe continues to strikes the right balance and provides clarity as to what can and cannot be patented with regard to computer-implemented inventions. It does not change anything, but maintains the status quo."

"Changes in patent practice in the US in the last five years have caused concern in some areas of the computer industry and the Directive will ensure that Europe continues on its own path which is a balanced approach that both creates a climate for innovation and supports open source software."

Peter Hayward of the Patent Office also addressed the meeting. He said:

"The Directive, in its current form, is vital in protecting the innovations in the European software market."

"The intention is to maintain high criteria for those seeking patent protection, and to prevent any drift in patent standards towards the current US position."

"This was a highly productive meeting which brought out a number of key issues in the discussion which we will take forward."

The Patent Office has been in consultation with the software industry since 1994. Responses to both formal and informal consultation have indicated that the law does not need to be changed, but requires clarification.

The Patent Office estimates that up to 20% of patent applications received are for inventions which use software. Mere computer program listings, like lines of code, are protected by copyright but excluded from patent protection in the UK and Europe. However inventions in which software makes a technical contribution, like a mobile telephone or car engine management systems, have always been and will continue to be patentable. Patents like these underpin the research and development infrastructures of many hi-tech businesses in Europe.

The Directive is expected to return to the European Parliament for a second reading early next year.

The IPKat welcomes the UK government's position which, he feels, strikes a workable balance between the competing interests upon which the software industry depends for its dynamism and its long-term growth.

What the Computer Implemented Inventions Directive means hereComments on the proposed Directive here, here and here

Issue 5 of Life Sciences Law & Business, the bimonthly published by Legalease, has just been published. Each issue typically contains seven articles: coverage includes intellectual property, regulatory and commercial issues and the writers are drawn from the ranks of practitioners on both sides of the Atlantic. This issue includes, among other items, the following:

* A review by Penny Gilbert (Bristows) of the recent House of Lords decision in Kirin-Amgen v Transkaryotic Therapies.

* A lively piece on "reach-through royalties" and patented research tools by Foley Hoag's Donald Ware (the IPKat reckons this can be a real growth area for litigation until the key points are resolved by legislation or, more likely, judicial rulings).

The IPKat commends this excellent and readable publication to anyone interested in the life sciences/law interface. The articles are short, well-focused and topical and the price (£315) looks pretty fair for a specialist legal publication in this day and age.

Tuesday, 14 December 2004

Ananova brings more news of artistic curiosities, from Chile. This item features artist Sebastian Mahaluf, who has wrapped three floors of the Centro Cultural Espana museum with 8500 metres of elastic ribbon in Chile's captain Santiago. The ribbons cross the middle of each floor several times, entering every window and creating the illusion of the sunlight coming in. Professional climbers were used to wrap the ribbons outside the building. Mr Mahaluf told Chilean newspaperLas Ultimas Noticias:

"This work is very much dependent on people´s individual observation because it cannot be seen as a whole, one can only observe bits of it at different times".

The IPKat wonders not only whether this "work" is an artistic work that is entitled to copyright protection in terms of the Berne Convention, as well as whether the use of the same notion inside a different building could constitute an act of copyright infringement. Merpel thinks it sounds more like a giant cat's cradle and wants to know if she can play with it.

The Court of First Instance gave judgment yesterday in Case T-8/03 El Corte Inglés v OHIM - Pucci (EMILIO PUCCI). It is available in a number of languages including Latvian, Lithuanian and Slovak -- but not English.

The IPKat wonders why the European Commission spends his hard-earned money on a variety of causes all over the world, but won't provide enough cash for immediate translation of cases involving EU law into the world's most widely-used language in intellectual property circles. Who, he wants to know, is the person responsible for the translation of ECJ and CFI cases? What is the basis of current translation policy? Does it have any official sanction? How are English-speaking lawyers expected to compete in the provision of legal advice, with lawyers from France, Germany and other countries in the lucrative market for intellectual property services when the others can rely on official texts and translations but English-speakers must make to with unofficial translations? Why is this state of affairs being allowed to continue? How much would it cost to provide timely translation of ECJ and CFI decisions in all main EU languages? What is the Department of Trade and Industry in the UK doing about it? Why is no-one else shouting?

Findlaw reports that a disgruntled litigant has put a judge up for sale on ebay. Janet Schoenberg placed a picture of housing judge Jerald R. Klein, together with criticism of the way the judge was conducting her case. In the fine print Schoenberg explained that she wasn’t actually selling the judge, but was instead selling a recording of the proceedings which she described as a “work of art”. The ad was subsequently removed by eBay on grounds of misleading description, unauthorised use of a photo and unauthorised use of a name. There were 21 bids, but the top price was only $127.50 (including shipping).

The IPKat’s heart is pounding with excitement at the thought of all the IP rights that may be involved here: (i) personality rights of the judge, (ii) copyright in the photo of him, (iii) copyright in the recording and (iv) (at a longshot) the judge’s goodwill in his image leading to a passing off claim.

Another judge for sale hereOther things you can buy for $127.50 here, here and here

Monday, 13 December 2004

According to the excellent Digital Lifestyles magazine the UK Film Council has launched today a 94-page report containing 30 measures the Council feels will help defeat the spread of unauthorised film copying in the UK. Compiled by the Anti-Piracy Taskforce convened by the UK Film Council it contains suggestions of short, medium and long-term actions aimed at the UK Government, the UK film industry and, what they call, "Government-backed and other film sector stakeholders". Started in Summer 2003, it has taken nearly 18 months to complete. The report is being forwarded to The Creative Industries Forum on Intellectual Property, which was launched by the UK Government in July this year. Headed by the Department for Culture, Media and Sport, Department of Trade and Industry and Patent Office, the group contains Ministers from eight Government Departments including the Treasury and Home Office.

Based on figures from the Federation Against Copyright Theft (FACT), the report estimates the value of black market in pirate DVDs in the UK to be £400-£500 million in 2003 and they expected it to exceed £1 billion within three years, based on their retail price. The report lists the main sources of copied DVDs as Pakistan (36%), Malaysia (31%) and China (14%).

The IPKat admires the effort that has gone into this report, but doubts that the UK government will do nothing to stop the piracy (i.e. nothing that might lose it votes before next year's election). Merpel says, "hey, doesn't £500 million work out at nearly £10 per man, woman and child in the UK? Do we really spend that much on pirated CDs?"

Ananova reports that Geng Xiaohong, a teacher in northwestern China, is under investigation for getting his students write their own epitaphs. Mr Geng, who teaches in a secondary school in Xi'an, believes that epitaph writing helps develop students' values and encourages them to think about the meaning of life. This practice has made some parents and experts uncomfortable, because talking about death while still alive is considered taboo in China. Professor Hao Wenwu of Shaanxi Normal University is reported as saying:

"If this technique is used too often children might lose hope in their life."

The IPKat rather likes the idea of people writing their own epitaphs. For one thing, it means that they'll own the copyright in them. For another, if the epitaph is inscribed on a tombstone or other tangible record, it will be easy to discover when the copyright term of the deceased writer has expired.

The New York Times reports that the US Supreme Court has agreed to hear a case concerning the liability of the providers of peer-to-peer file-sharing software for copyright infringement. In Metro-Goldwyn-Meyer v Grokster, the court will put an end to uncertainty about liability for facilitating unauthorised film and music downloads. Although Napster was found to have infringed, Grokster was not since its technology worked in a way that didn’t allow it to control what was being exchanged over its network. The case will be heard in March 2005 and a decision is expected by some time in June of that year. Inevitable comparisons are being made with the 1984 Sony v Betamax case, which decided that the manufacturers of video recorders were not liable for copyright infringement. Because their machinery could be used in a way that did not infringe copyright.

The IPKat isn’t sure that they comparison with Sony v Betamax is a good one since the primary source of material for be “downloaded” there was from the television, which could be legitimately watched by the same viewers who videoed the programmes. However, those who benefit from P2P sourced music usually haven’t been in contact with a legitimate method of obtaining it. Merpel points out that whichever way the court is decided, the downloaders themselves will be infringing.

Both sides of the story here and here.
Another musical court case here

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